United States District Court, D. Delaware
INTELLECTUAL VENTURES I, LLC and INTELLECTUAL VENTURES II LLC, Plaintiffs,
MOTOROLA MOBILITY LLC, Defendant
For Plaintiff: Margaret Elizabeth Day, Esquire, David L. Alberti, Esquire, Clayton Thompson, Esquire, Marc C. Belloli, Esquire, Yakov Zolotorev, Esquire, and Nickolas Bohl, Esquire of Feinberg Day Alberti & Thompson LLP, Of Counsel, Brian E. Farnan, Esquire of Farnan, LLP, Wilmington, Delaware.
For Defendant: Candice Decaire, Esquire, D. Clay Holloway, Esquire, and Steven Moore, Esquire of Kilpatrick Townsend & Stockton LLP, and David A. Nelson, Esquire, David A. Perlson, Esquire, Patrick D. Curran, Esquire and Joshua L. Sohn, Esquire of Quinn Emanuel Urquhart & Sullivan LLP, Of Counsel, Jack B. Blumenfeld, Esquire and Stephen J. Krafschik, Esquire of Morris Nichols, Arsht & Tunnell LLP, Wilmington, Delaware.
Sue L. Robinson, ROBINSON District Judge.
Plaintiff Intellectual Ventures I, LLC (" IV I" ) and Intellectual Ventures II, LLC (" IV II" ) (collectively " IV" ) brought this patent infringement action against defendant Motorola Mobility, Inc. (" Motorola" ) on October 6, 2011, alleging infringement of six patents: U.S. Patent Nos. 7,810,144 (" the '144 patent" ), 6,412,953 (" the '953 patent" ), 7,409,450 (" the '450 patent" ), 7,120,462 (" the '462 patent" ), 6,557,054 (" the '054 patent" ), and 6,658,464 (" the '464 patent" ). (D.I. 1) Motorola answered and asserted affirmative defenses of, inter alia, failure to state a claim, non-infringement, invalidity, prosecution history estoppel, the equitable doctrines of waiver, acquiescence, laches and unclean hands, and statutory time limitation on damages. (D.I. 10) Motorola also asserted counterclaims for non-infringement and invalidity. Id.
On August 20, 2013, Motorola filed a motion for summary judgment of invalidity (D.I. 230), and on September 10, 2013, Motorola filed a motion for summary judgment of non-infringement (D.I. 252). In a memorandum opinion and order dated January 2, 2014, the court issued its claim construction and resolved several summary judgment motions, finding no infringement of claim 26 of the '144 patent and invalidity of claim 1 of the '953 patent based on the asserted prior art. (D.I. 284) On January 8, 2014, the court limited trial to those issues related to the '462, '054 and '464 patents. (D.I. 288)
A nine-day jury trial was held on January 24 -- February 4, 2014. The trial resulted in a hung jury and a mistrial was declared. The court granted in part and denied in part Motorola's motion for judgment as a matter of law, granting judgment as a matter of law with respect to invalidity of claims 1 and 8 of the '464 patent. (D.I. 319) The court set two new trial dates for the '144, '450, 054 and '462 patents, with the first trial to begin on March 16, 2015. Presently before the court is Motorola's supplemental brief on patent eligibility and indefiniteness. (D.I.
360) The court has jurisdiction pursuant to 28 U.S.C. § § 1331 and 1338(a).
A. The Parties
IV I and IV II are limited liability companies organized and existing under the laws of the State of Delaware, with their principal place of business in Bellevue, Washington. (D.I. 1 at ¶ ¶ 1-2) IV I owns the '144, '450, '054, and '464 patents. ( Id. ¶ 10, 14, 18, 20) IV II is the exclusive licensee of the '953 patent and owns the '462 patent. ( Id. at ¶ ¶ 12,16)
Motorola is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business in Libertyville, Illinois. ( Id. at ¶ 3) It makes, manufactures, and/or sells the accused products. ( Id. at ¶ 28)
B. The Patents
1. The'054 Patent
The '054 patent, titled " Method and System for Distributing Updates by Presenting Directory of Software Available for User Installation That Is Not Already Installed on User Station," was filed April 20, 2000 and issued April 29, 2003. The invention relates to " a method and corresponding system for distributing updates for a plurality of different products to a plurality of uncoordinated user stations via a non-proprietary network." ('054 patent, col. 1:30-34) The claimed invention purports to improve upon the " expenseQ" and " time lag" of information products " replicated in computer-readable form on magnetic or optical storage diskettes" by utilizing " electronic transfer from a central computer server to a subscriber's computer over common carriers or wide area networks." ( Id. at col. 1:40-62)
2. The '450 Patent
The '450 patent, titled " Transmission Control Protocol/Internet Protocol (TCP/IP) Packet-Centric Wireless Point to Multi-Point (PTMP) Transmission System Architecture," was filed February 28, 2005 and issued August 5, 2008. The '450 patent claims a system and method for " coupling one or more subscriber customer premise equipment (CPE) stations with a base station over a shared wireless bandwidth using a packet-centric protocol; and allocating the wireless bandwidth and system resources based on contents of packets." ('450 patent, Abstract) The invention specifically relates to " a system and method for implementing a QoS [quality of service] aware wireless point-to-multi-point transmission system." ( Id. at col. 3:27-30)
3. The '144 Patent
The '144 patent, titled " File Transfer System for Direct Transfer Between Computers," was filed on April 7, 2009 and issued on October 5, 2010. The '144 patent " relates to transferring computer files
electronically from one location to another, and more particularly to electronic transfer of computer files directly between two or more computers or computing devices." ('144 patent, col. 2:4-7)
111. STANDARDS OF REVIEW
A. Summary Judgment
" The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n.10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). A party asserting that a fact cannot be -- or, alternatively, is -- genuinely disputed must support the assertion either by citing to " particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for the purposes of the motions only), admissions, interrogatory answers, or other materials," or by " showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed.R.Civ.P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then " come forward with specific facts showing that there is a genuine issue for trial." Matsushita, 475 U.S. at 587 (internal quotation marks omitted). The court will " draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).
To defeat a motion for summary judgment, the non-moving party must " do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005) (stating party opposing summary judgment " must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue" ) (internal quotation marks omitted). Although the " mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment," a factual dispute is genuine where " the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). " If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (stating entry of summary judgment is mandated " against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial" ).
1. 35U.S.C. § 101
The standard of proof to establish the invalidity of a patent is " clear and convincing evidence." Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1058 (Fed. Cir. 2004); see also, Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1338-39 (Fed. Cir. 2013), vacated sub nom. WildTangent, Inc. v. Ultramercial, LLC, __ U.S. __, 134 S.Ct. 2870, 189 L.Ed.2d 828 (2014). Whether a claim is drawn to
patent-eligible subject matter under 35 U.S.C. § 101 is a threshold inquiry to be determined as a matter of law in establishing the validity of the patent. CLS Bank Int'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1277 (Fed. Cir. 2013), aff'd, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, __ U.S. __, 134 S.Ct. 2347, 82 L.Ed.2d 296, 189 L.Ed.2d 296 (2014); In re Bilski, 545 F.3d 943, 950 (Fed. Cir. 2008) (citing In re Comiskey, 499 F.3d 1365, 1371 (Fed. Cir. 2007)) (" Bilski I " ). Section 101 provides that patentable subject matter extends to four broad categories, including: " new and useful processes], machine[s], manufacture, or composition[s] of matter." 35 U.S.C. § 101; see also Bilski v. Kappos, 561 U.S. 593, 601, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010) (" Bilski II " ); Diamond v. Chakrabarty, 447 U.S. 303, 308, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980). A " process" is statutorily defined as a " process, art or method, and includes a new use of a known process, machine manufacture, composition of matter, or material." 35 U.S.C. § 100(b). The Supreme Court has explained:
A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain ...